If you've worked in the building trades, you've seen people trudging around with their feet up to a yard or more off the ground. Blawgletter does not refer to self-levitation. We mean instead the workers -- often those putting up drywall -- who walk on stilts so they can reach high spots at will.
Yesterday, the Federal Circuit used a case involving a patent on such height enhancers to teach about false patent "marking". Often you'll see the words "patent pending" or "protected by U.S. patents X,XXX,XXX and Y,YYY,YYY" on a tool or other device. To what purpose, you say? It has to do with giving "public notice of patent rights", the court explained.
"Congress intended the public to rely on marking as a ‘ready means of discerning the status of intellectual property embodied in an article of manufacture or design.’" . . . Acts of false marking deter innovation and stifle competition in the marketplace. . . . If an article that is within the public domain is falsely marked, potential competitors may be dissuaded from entering the same market. False marks may also deter scientific research when an inventor sees a mark and decides to forego continued research to avoid possible infringement. . . . False marking can also cause unnecessary investment in design around or costs incurred to analyze the validity or enforceability of a patent whose number has been marked upon a product with which a competitor would like to compete. . . .
The Forest Group, Inc. v. Bon Tool Co., No. 09-1044, slip op. at 11 (Fed. Cir. Dec. 28, 2009) (citations omitted).
The case involved Forest Group's claim that Bon Tool infringed a stilt patent. Bon Tool counterclaimed that Forest Group falsely marked its stilts to claim protection under the patent. The district court held that neither company's stilts met the "resiliently lined yoke" limitation in the patent and therefore that Bon Tool didn't infringe and that Forest Group violated the false-marking statute when it marked its stilts with the patent number.
The big issue came down to the remedy for Forest Group's false marking. The district court imposed a single $500 fine under 35 U.S.C. 292, a branch of the Lanham Act. The Federal Circuit begged to differ, concluding that the key part -- which allows up to $500 in fines for "every such offense" -- calls for a fine on each article that bears the false mark. Forest Group, slip op. at 8-14.
The panel turned aside predictions that a swarm of "marking trolls" will make "a new cottage industry" of false-marking claims. Id. at 12. District courts may order fines far less than $500 under section 292, the panel noted, even "a fraction of a penny per article". Id. at 13. So much for huge windfalls.
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